Registered Design Infringement - Expert Evidence
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18 May 2010
This article discusses the relevant considerations in relation
to a potential claim against a third party for registered design infringement.
In a registered design infringement case it is important to
consider the following factors;
1) Assess the registered design in questions;
2) Assess the object/ design which is subject to the potential
claim (i.e. the infringing article);
3) Asses the prior art that exists (i.e. what else is on the
market that could defeat the novelty/ newness of the design).
Put simply, the most important factor to consider is what the
designs look like.
In most cases it should be possible to examine a registered
design case in a few hours and make conclusions as to the merits of that case.
It will be important to consider the evidence of the designer however whether
he/she was trying to make, or thought he/she had made, a breakthrough, is
irrelevant. The evidence of experts, particularly regarding consumer products,
is unlikely to be of much assistance: anyone can point out similarities and
differences, though an educated eye can sometimes help more. Sometimes there may
be a piece of technical evidence which is relevant - e.g. that design freedom is
limited by certain constraints. But even so, that is usually more or less
self-evident and certainly unlikely to be controversial to the point of a need
Most registered designs are for consumer articles and objects
purchased or to be appreciated by ordinary members of the public. Experts are
not usually required in cases involving registered designs for consumer
products. There is a feeling amongst the legal profession that one must always
have an expert, but this is not strictly so. No-one should feel that their case
might be disadvantaged by not having an expert in an area when expert evidence
is unnecessary. Evidence of technical or factual matters, as opposed to consumer
'eye appeal' may, on the other hand, sometimes have a part to play - that would
be to give the court information or understanding which it could not provide
The spirit and effect of the CPR require the court to look even
more closely at the need for expert evidence. In registered design actions, it
could be argued that the court should take care before allowing any expert
evidence. In particular, the court should know precisely to what areas that
expert evidence will be directed. If blanket permission is given, each side
feels compelled to get an expert who then has to say something. What is then
said has to be read by the other side. Thereby time and cost to no particular
use is expended.
It is for instance, clear law that whether or not the defendant
copied is irrelevant; see, for example, per Aldous J. in Gaskell & Chambers Ltd
v. Measure Master Ltd  R.P.C. 76, 81. So it is irrelevant for the
claimants' witness to throw down a challenge that he thought the defendant
copied, as was done here, and it is equally irrelevant for the defendant to
prove or to give disclosure about how his design was arrived at.
Similarly, it is irrelevant for the claimant to prove, if it be
the case, that he spent funds in arriving at his design. It matters not whether
he thought of it at random or by engaging the most prestigious design
consultants in the world.
About the Author
Lawdit Solicitors offer services and
advice for litigation, commercial contracts, Intellectual Property and IT legal
agreements. We are experts in commercial law with a heavy emphasis on
Intellectual Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of Higher Court
Advocates and we are the appointed Solicitors to the largest webdesign
association in the world, the United Kingdom Website Designers Association.
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Article Published/Sorted/Amended on Scopulus 2010-05-29 22:00:31 in Legal Articles